OPPOSITION No B 2 661 042

Hipercor, S.A., Calle Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 – 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Claudia Alliata di Villafranca, Via della Cuba, 16, 91100 Trapani, Italy (applicant).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 661 042 is upheld for all the contested goods.

2.        European Union trade mark application No 14 880 157 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 880 157. The opposition is based on, inter alia, European trade mark registration No 6 787 253. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European trade mark registration No 6 787 253.

1. The goods

The goods on which the opposition is based are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking – powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; olive oils; extra virgin olive oil. 

Class 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour and preparations made from cereals; bread; pastry and confectionery; edible ices; honey; syrups and treacles; yeast, baking-powder; salt; mustard; vinegar; herb-sauces; spices; ice. 

Class 33: Alcoholic beverages (with the exception of beers); wine; sparkling wines; liqueurs; grappa (brandies). 

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 29

The contested meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats are identically contained in both lists of goods.

The contested olive oils; extra virgin olive oil are included in the broad category of the opponent’s edible oils. Therefore, they are identical . 

Contested goods in Class 30

The contested coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour and preparations made from cereals; bread; pastry and confectionery; edible ices ; honey; treacles; yeast, baking-powder; salt; mustard; vinegar; spices; ice are identically contained in both lists of goods (including synonyms).

The contested herb-sauces are included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.

The contested syrups are similar  to the opponent’s sugar as they can coincide in end user and distribution channels. Furthermore they are in competition.

Contested goods in Class 33

The contested alcoholic beverages (with the exception of beers) are identically contained in both lists of goods.

The contested wine; sparkling wines; liqueurs; grappa (brandies) are included in the broad category of the opponent’s alcoholic beverages (with the exception of beers). Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘ALIADA’ and ‘ALLIATA’ are meaningless in French. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

The earlier mark is a figurative mark consisting of an oval background in dark and light green and in the middle of which the distinctive verbal element ‘ALIADA’ is written in a white fanciful upper case letter. The dot of the letter ‘I’ is depicted in yellow.

The contested sign is a figurative mark that consists of the distinctive verbal element ‘ALLIATA’ written in a relatively standard black capital letter and represented in the middle of a white rectangle with a black contour. A crown is depicted on the top of the rectangle.

The contested sign has no elements that could be considered clearly more dominant than other elements. However, the depiction of the crown plays an informative role because it will be understood by the relevant public as an ornamental headdress denoting sovereignty and will convey the perception that the products are of a particular standing and of good quality because of the knowledge acquired through the years. Consequently, the distinctiveness of this element is limited. The distinctiveness of the black rectangle is also limited because it is of a purely decorative nature.

The earlier mark has no element that could be considered more dominant than other elements. As for the distinctiveness of the elements of the earlier mark, the green background is less distinctive than the remaining verbal element of the mark. This is because this element is of a purely decorative nature (a simple geometric shape).

Visually, the signs coincide in the letters ‘A-L-*-I-A-*-A’ but differ in the additional letter ‘L’ placed in the third position of the contested sign, in the letter ‘D’ placed in the fifth position of the earlier mark and in the letter ‘T’ placed in the sixth position of the contested sign and with no counterpart in the other sign. They also differ in the background used to represent the signs and in the depiction of the crown in the contested sign. However, as already mentioned, the distinctive role of these elements is rather limited. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in sound of the letters ‘A-L-(L)-I-A-*-A’, present identically in both signs. It should be noted that the sound corresponding to the letters ‘LL’ in French is identical to the sound of the single letter ‘L’. Therefore, the pronunciation only differs in the sound of the letter ‘D’ placed in the fifth position of the earlier mark and in the letter ‘T’ placed in the sixth position of the contested sign. Nevertheless, despite being different letters, there is a certain degree of aural similarity between these letters which will be pronounced as ‘dé’ and ‘té’. Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the crown in the contested sign, its impact is limited insofar it is laudatory. The other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

In the present case the visual and aural coincidences are overwhelming. Indeed, as already explained, the main differences between the signs are confined to two letters and to elements which distinctive role within the signs is limited because of their decorative or laudatory purpose. Therefore, the impact of these differences is relatively reduced for the French-speaking consumers of the relevant territory.

In addition, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, the difference established may go unnoticed.

Furthermore, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Consequently, taking into consideration all the circumstances of the case, the Opposition Division concludes that the similarity of the marks under comparison is not counteracted by the visual and aural differences established between them.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 6 787 253. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right No 6 787 253 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benoit VLEMINCQ

Sandra IBAÑEZ

Frédérique SULPICE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.